Medieval scholars purportedly used to debate questions such as how many angels can dance on the head of pin. Some say that angels are pure intelligence and thus take up no space, so the answer is infinite. Others have tried to actually calculate a number through the laws of quantum physics. Patent attorneys are currently debating a similar question, which is whether an invention is an abstract idea. The USPTO has just issued new guidelines to help answer the question.

The new guidelines provide additional examples that attorneys can use to analogize why a particular claim is not abstract by comparing to the examples that are indicated as patent eligible. However, Examiners will likely respond with analogies to the claims that are indicated as patent ineligible.

The first example in the guidelines compares two claims related to the same subject matter, one being ineligible and the other eligible. The example relates to a method of distributing stock quotes over a network to a remote subscriber computer (modeled after a Covered Business Method Case and US 7,035,914), and is the type of application commonly rejected by Examiners as being too abstract. Here, the additional limitation of transmitting a formatted stock quote alert over a wireless communication channel to a wireless device associated with a subscriber based upon the destination address and transmission schedule is cited as being the key element that turns an ineligible claim into an eligible claim. According to the guidelines, these are meaningful limitations that add more than generally linking the use of the abstract idea (the general concept of organizing and comparing data) to the Internet, because they solve an Internet‐centric problem with a claimed solution that is necessarily rooted in computer technology, similar to the additional elements in DDR Holdings. These limitations, when taken as an ordered combination, allegedly provide unconventional steps that confine the abstract idea to a particular useful application.

This is a good example for applicants to use, but the strength of the reasoning leaves a bit to be desired. Transmitting over a wireless communication channel to a device associated with a subscriber seems just as conventional as other features in the guidelines that are asserted to be insufficient to transform the claim to eligible subject matter. Further, the distinctions noted by the guidelines seem to make the the determination of patent eligibility depend simply on the draftsman’s art, which goes against guidance from the Supreme Court.

In the end, while these guidelines can and will be used by applicants to help argue against Section 101 rejections, the analysis seems more akin to the medieval debate about angel existence than something that should consume time, energy, and resources from the technology and innovation that hopefully is driving our economy. My hope is that the focus returns to the basic elements of novelty and inventiveness, rather than esoteric abstract analyses that presume the answer in resolving the question.